This month we highlight four papers, two related to institutional design and two related to patent law. The first paper addresses the creation of specialized courts and why these courts persist. The second paper focuses on the problem of myopia in comparative institutional analyses of legal institutions and the need to incorporate comparative failure analysis. The third and fourth papers address patent law, respectively, the creation of a database to conduct empirical studies of patent litigation in U.S. district courts, and the U.S. Patent Office’s attempts to provide clarity in the area of patent eligibility through guidance documents. 

Erin Collins, The Problem of Problem-Solving Courts, SSRN (Dec. 9, 2019)

University of Richmond law professor Erin Collins has written a paper seeking to answer the question of why specialized, “problem-solving” courts persist. Focusing on courts created to address problems in the criminal legal system, she argues that these “courts persist in part because they revive a sense of purpose and authority for judges in an era marked by a diminishing judicial power.” Based on this point, she contends that “problem-solving courts do effectively solve a problem—it is just not the problem we think.” Moreover, she contends that “judicial investment in, and control over, problem-solving courts can create resistance to new and perhaps more effective methods of reform.” While she does not address the Federal Circuit in particular, her analysis proves thought-provoking given that the Federal Circuit was created in 1982 in part to solve problems then-prevalent in patent law.

Mark P. McKenna & Brett M. Frischmann, Comparative Analysis of Innovation Failures and Institutions in Context, SSRN (Jan. 8, 2020)

Notre Dame’s Mark McKenna and Villanova’s Brett Frischmann will be publishing a jointly-authored paper in the Houston Law Review regarding institutional analysis of legal institutions. They criticize an approach to institutional analysis that “focus[es] on a particular dilemma . . . and then compare[s] institutions in terms of effectiveness in resolving the delimma.” Instead, they suggest what is also needed is “comparative failure analysis,” in other words “rigorous and contextual comparative analysis of the ways different institutional responses fail.” They explain, in more detail, that they “criticize ambiguity in normative baselines,” in other words ambiguity in “the objectives, values or ends ultimately driving evaluation.” As well, they “criticize myopia in the analysis of social dilemmas, and particularly an inappropriately narrow focus on market failures.” They explain that they aim these criticisms “constructively at comparative institutional analysis in [intellectual property],” including “work deal[ing] with the comparative advantages or disadvantages of certain institutions within the existing intellectual property framework.”

David L. Schwartz, Ted M. Sichelman, & Richard Miller, USPTO Patent Number and Case Code File Dataset Documentation, SSRN (Dec. 23, 2019)

Two law professors from Northwestern and the University of San Diego joined forces with an economist working at the U.S. Patent and Trademark Office to author a paper announcing a “single, comprehensive dataset of patents, case types, and related case information to conduct empirical studies of patent litigation in the U.S. district courts.” They point out that researchers in the past “have typically had to rely on proprietary, commercial databases to retrieve comprehensive lists of litigated patents and associated case information, precluding publication of underlying data and the verification of study results.” They sought to solve this problem by “review[ing] every available initial complaint and related documents in roughly 99 percent of all patent cases filed in U.S. district courts between 2003 and 2016.” They then “generate[d] a comprehensive list of litigated patents in those cases” and married “full case and docket information” provided by the U.S. Patent and Trademark Office “for every one of these cases.” This data may prove useful in studies of the Federal Circuit given its now-exclusive jurisdiction over every appeal in these cases.

Brendan Costello, Rulemaking § 101, SSRN (Feb. 4, 2020)

Recent Yale Law School graduate Brendan Costello will publish in the Yale Law Journal a note studying the efforts by the U.S. Patent and Trademark Office to “fill the void left by judicial uncertainty” in the area of patent eligibility law. He explains that “recent decisions by the Supreme Court and the Federal Circuit have muddied the distinction between patentable and unpatentable subject matter.” He goes on to say that the “state of the law is so dire that it has prompted innovators and academics to warn of serious consequences on investment and innovation and has spurred a notoriously ossified Congress into bipartisan drafting.” He highlights that the USPTO has “used the Federal Register and its own website to seek public comment and clarify subject-matter eligibility with increasing frequency and increasing boldness in recent years.” In his view, however, the USPTO “lacks the authority to address this crisis as it has no substantive rulemaking authority over patentability.” While, in his view, “Congress should grant the USPTO rulemaking authority over patentability,” until then Costello argues that the USPTO’s “recent guidance threatens to push the boundaries of its current authority and run afoul of the [Administrative Procedure Act].”